PLANSEE SE

Patent Trials and Appeals Board

Dec 30, 2021

2021000514 (P.T.A.B. Dec. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/571,600 11/03/2017 ANDRE DRONHOFER WTH-82510 8126
24131 7590 12/30/2021
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
BRAYTON, JOHN JOSEPH
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
12/30/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@patentusa.com
office@patentusa.com
vrahimis@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE DRONHOFER, CHRISTIAN LINKE,
and ELISABETH EIDENBERGER

Appeal 2021-000514
Application 15/571,600
Technology Center 1700

Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.

MCGEE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–20. We have jurisdiction.
35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Plansee SE. Appeal Br. 1.
Appeal 2021-000514
Application 15/571,600

2
CLAIMED SUBJECT MATTER
The claims are directed to a target for a cathode sputtering installation.
Claim 11. The target material is sputtered by plasma means and deposited
as a thin layer onto a substrate. Spec. 1:4–6. Because the target is rotated
during operation and due to cyclical thermal stress on the target surface,
various mechanical stresses arise in the target. Id. at 4:12–14. This may
also result in a loss of vacuum tightness due to failure of the material-
integral or form-fitting connection between the target body and the
connector pieces. Id. at 4:16–18. The connection points are said to be
particularly susceptible to crack formation. Id. at 4:20. The claimed subject
matter is purported to provide an improved tubular target having an extended
service life and a reduced tendency towards crack formation. Id. at 4:24–25.
Independent claim 11, reproduced below, is illustrative of the claimed
subject matter with the key limitation on appeal italicized:
11. A target for a cathode sputtering installation, the target
comprising:
a tubular target body formed of a sputtering material;
at least one connector piece connected to said target body in
a materially integral manner and protruding from said target
body for connecting said target body to the cathode sputtering
installation;
said target body being connected to said at least one connector
piece in a vacuum-tight manner and so as to be secured against
twisting; and
at least one damping element disposed between said at least
one connector piece and said target body.
Appeal Br. 15 (Claims App.).
Appeal 2021-000514
Application 15/571,600

3
REJECTIONS2
I. Claims 11–15 and 18–20 under 35 U.S.C. § 103 as unpatentable
over Heinrich3 in view of Weigert4;
II. Claim 16 under 35 U.S.C. § 103 as unpatentable over Heinrich
in view of Weigert and Lippens5; and
III. Claim 17 under 35 U.S.C. § 103 as unpatentable over Heinrich
in view of Weigert and Ueda.6
Final Act. 3–6.
OPINION
The Examiner’s findings and conclusions in support of the grounds of
rejection with respect to claim 11 appear at pages 3–4 of the Final Office
Action. We need only discuss claim 11.
The dispositive issue on appeal is whether the Examiner provided
sufficient reasoning for the skilled artisan to have combined the teachings of
Heinrich and Weigert to arrive at the claimed subject matter. Final Act. 3–4.
Because the Examiner has failed to do so on this record, we reverse the
rejections on appeal.

2 In the Answer, the Examiner withdrew the rejection of claim 14 under 35
U.S.C. § 112(d) for failing to comply with the proper dependent form
requirement. Ans. 7.
3 DE 10 2013 103 472 B4, published Oct. 9, 2014. We rely on the
uncontested English-language machine translation.
4 DE 10 2004 058 316 A1, published June 8, 2006. We rely on US
2006/0151320 A1 as an uncontested English-language translation.
5 US 5,904,966, issued May 18, 1999.
6 US 6,787,011 B2, issued Sept. 7, 2004.
Appeal 2021-000514
Application 15/571,600

4
In rejecting claim 11, the Examiner determines that the ordinary
skilled artisan would have modified Heinrich’s target for a cathode
sputtering installation with Weigert’s target body, which is connected to a
fastening device. Id. at 9. Specifically, the Examiner’s proposed
modification would have required the artisan to have connected Heinrich’s
holding device 102 and target tube 410 in a materially integral manner.
Heinrich Figs. 4A–4D. According to the Examiner, one of ordinary skill in
the art would have been motivated to modify Heinrich’s target because
Weigert teaches that doing so provides better thermal conductivity. Final
Act. 4 (citing Weigert ¶ 7).
Appellant challenges the Examiner’s stated reason to combine
Heinrich and Weigert because Heinrich’s “target tube 410 needs to be
removably attached to the holding device of the vacuum operating
component 100” (i.e., the claimed “cathode sputtering installation”). Appeal
Br. 8 (emphasis omitted). Appellant questions how Weigert’s relied-upon
passage would have motivated one of ordinary skill in the cathode sputtering
art to redesign Heinrich’s cathode sputtering installation, which requires a
sputtering material source. Id. (asserting that it is well-known in the art “that
a target is . . . a sputtering source for a cathode sputtering installation, and
. . . the target material is sputtered by the plasma and is deposited as a thin
layer on a substrate”) (emphases omitted). In particular, Appellant contends
that Heinrich’s installed target requires replaceability because the target
sputtering material source is consumed during the sputtering process. Id. at
9 (arguing that “the person of ordinary skill in the art understands that the
tube target 410 needs to be removably installed so that the tube target 410
can be replaced.”).
Appeal 2021-000514
Application 15/571,600

5
Appellant’s arguments are persuasive of reversible error.
Although the Examiner’s rejection asserts that the ordinary skilled
artisan would have been motivated to connect Heinrich’s holding device 102
and target tube 410 in a materially integral manner (Final Act. 4), the
Examiner fails to provide sufficient reasons why such a change would have
been desired in view of the apparent drawbacks inherent in such a change.
See Ans. 8 (“Weigert’s materially integral connection of soldering/welding
inherently provides for releasability because a solder joint can be melted and
welds cut [into] separate pieces.”). On this record, we are not persuaded that
one of ordinary skill in the art would have been motivated to materially
integrate Heinrich’s target tube 410 and holding device 102, and thus forego
the ease of replacing Heinrich’s target tube 410, for the stated benefit of
“better thermal conductivity.” Final Act. 4.
To establish a prima facie case of obviousness, it is not enough to
assert what modifications the skilled artisan could have made to the prior art.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))). The
appeal record does not adequately explain why the skilled artisan would
have been sufficiently motivated to modify the teachings of Heinrich in the
manner proposed, particularly in view of the countervailing reason not to
modify these references, i.e., melting of solder joints and cutting welds. For
this reason, we do not sustain the Examiner’s obviousness rejection.
Appeal 2021-000514
Application 15/571,600

6
Remaining claims 12–20 depend from claim 11, and are similarly
rejected over Heinrich and Weigert either with or without Lippens or Ueda.
Final Act. 3–6. Thus, for the reasons outlined above with respect to claim
11, we also reverse the rejections of dependent claims 12–20 under 35
U.S.C. § 103.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–15,
18–20
103 Heinrich, Weigert 11–15, 18–
20
16 103 Heinrich, Weigert,
Lippens
16
17 103 Heinrich, Weigert,
Ueda
17
Overall
Outcome
11–20

REVERSED